Tuesday, June 15, 2021

Judge Newman's dissent in Yu v. Apple

Judge Newman's dissent begins:

The invention described and claimed in U.S. Patent No. 6,611,289 (“the ’289 patent”) is a digital camera having two lenses mounted in front of separate image sensors, with analog to digital conversion circuitry, a memory that stores the images, and a digital processor that enhances the images. This camera is a mechanical and electronic device of defined structure and mechanism; it is not an “abstract idea.” Observation of the claims makes clear that they are for a specific digital camera: (...)

This is a 101 case:

The majority states that this digital camera is ineligible for consideration for patenting because “claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.” Maj. Op. at 5. I repeat: claim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images. The camera of the ’289 patent may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea (...)

In contravention of this explicit distinction between Section 101 and Section 102, the majority now holds that the ’289 camera is an abstract idea because the camera’s components were well-known and conventional and perform only their basic functions. That is not the realm of Section 101 eligibility. The Supreme Court disposed of this position in Diehr:

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.”

Diehr, 450 U.S. at 189–90 (quoting In re Bergy, 596 F.2d 952, 961 (C.C.P.A. 1979), vacated as moot, Diamond v. Chakrabarty, 444 U.S. 1028 (1980)). I stress this history, for the principle that the majority today invokes was long ago discarded. A device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting.
In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness. The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received. The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.

I respectfully dissent.

Thursday, June 03, 2021

Speedtrack loses at CAFC. Interesting text: That can’t be right.

The outcome was that appellant lost:

SpeedTrack, Inc. (“SpeedTrack”) appeals the United States District Court for the Northern District of California’s final judgment of noninfringement, which hinged on the court’s claim construction. We affirm.

The usual words on claim construction were enumerated:

The words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms “must be read in view of the specification.” Id. at 1315. And “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. at 1317. “A patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope to which he would otherwise have an exclusive right by virtue of the claim language.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009). We review claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).

(...) “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, we have both. On this prosecution record, we agree with the district court’s assessment. In no uncertain terms, “the applicant[]s argued that Schwartz had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims.” J.A. 13. Therefore, the claims exclude predefined field-and-value relationships as explained by the district court. They are disclaimed. SpeedTrack interprets the prosecution record differently. According to SpeedTrack, the applicants indicated merely that the “category descriptions” of the ’360 patent are not the fields of Schwartz and that the hierarchical limitation precludes predefined hierarchical relationships only among category descriptions.5 Appellant’s Br. at 49, 59. We disagree. The ’360 patent applicants repeatedly highlighted predefined hierarchical field-and-value relationships as a difference between Schwartz and the ’360 patent.

Oral argument is cited:

Oral Arg. at 6:09–18 (recognizing that “Schwartz had a hierarchical relationship between the field and the values” but “did not have a hierarchical relationship between different values.”).6 This could not have distinguished Schwartz. But that is the import of SpeedTrack’s position. E.g., Oral Arg. at 3:45–4:18 (“‘Language’ would be a category and ‘French’ would be an example of that category. That relationship becomes excluded because of the court’s construction. It shouldn’t have been excluded. It wasn’t disclaimed.”); see Appellant’s Br. at 34–35. That can’t be right.

Footnote 6
6 No. 20-1573, http://www.cafc.uscourts.gov/oral-argument-recordings.

Note also

SpeedTrack also contends that the applicants distinguished Schwartz on other grounds. But that changes nothing. “An applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Plus, as Cross-Appellants point out, SpeedTrack’s position contradicts its other litigation statements. For example, SpeedTrack stated the following in a motion: The purpose of the amendment was to clarify that the claims, as amended, are distinguished from Schwartz’s and Cochran’s “field”/“attribute” configuration, which requires a “hierarchical” relationship between values and fields, i.e., each value must correspond to an associated field type (e.g., the term “English” (a value) must be related to the term “Language” (a field)).

Wednesday, June 02, 2021

CAFC affirms ITC in Bio-Rad case

Some background:

The asserted patents arise out of research conducted by inventors at a company called QuantaLife, Inc. Three of the inventors—Drs. Kevin Ness, Donald Masquelier, and Benjamin Hindson3—were among the founders of QuantaLife in 2008. In 2011, Bio-Rad purchased QuantaLife for approximately $160 million. See Order No. 15: Initial Determination Granting Complainants’ Motion for Summary Determination that the Doctrine of Assignor Estoppel Precludes Respondent from Challenging the Validity of the Asserted Patents, In the Matter of Certain Microfluidic Devices, USITC Inv. No. 337-TA-1068, 2018 WL 2003443, at *4 (Mar. 5, 2018) (“Assignor Estoppel Opinion”). With the purchase, Bio-Rad acquired QuantaLife’s patent rights, see id., presumably including QuantaLife’s rights to provisional patent applications from which the ’664, ’682, and ’635 patents claim priority. See J.A. 422, 475, 512. At the time of the purchase, Drs. Ness, Masquelier, and Hindson became employees of Bio-Rad, and over the following two years they executed assignments to Bio-Rad of their rights to the applications that later issued as the ’664, ’682, and ’635 patents. Assignor Estoppel Opinion, 2018 WL 2003443, at *5–6.

Not long after Bio-Rad acquired QuantaLife, Drs. Hindson and Ness left Bio-Rad to start 10X, and Dr. Masquelier joined 10X shortly thereafter as its fifth employee. Id. at *7. 10X has developed technology and products in the field of microfluidics that are designed for use with commercial next-generation sequencing platforms, with the goal of achieving DNA and RNA sequencing at the single cell level. Drs. Hindson, Ness, and Masquelier were all “extensively involved with the design, implementation, and/or manufacture” of 10X’s products. Id.

The meaning of the word "sample" is at issue!

10X further argues that the “hallmark” of a sample in the context of the ’664 patent is that there is something within it that is tested and analyzed. See 10X Br. at 27 (citing the ’664 patent’s definition of “analyte,” which is “a component(s) or potential component(s) of a sample that is analyzed in a test”). While 10X concedes that it performs quality control testing on a small subset of droplets, it argues that the monomers are not tested or analyzed in such a way as to make them samples because “they are an already-known starting material for an already-known polymerization reaction.” See 10X Br. at 30. Moreover, 10X argues, because the monomer solution was carefully designed with particular concentrations of ingredients to form gel beads, the composition is known and does not need to be tested.

The compelling factor here is the distinction between “samples” and “reagents.” The ’664 patent consistently makes clear that a sample is not a reagent, beginning with the opening sentences of the introduction section. See ’664 patent col. 1 ll. 26–31 (“Many biomedical applications rely on high-throughput assays of samples combined with reagents. For example, in research and clinical applications, high-throughput genetic tests using target-specific reagents can provide high-quality information about samples . . . .” (emphases added)). The patent goes on to list definitions that lead to the unavoidable conclusion that a compound cannot simultaneously be a sample and a reagent. For example, within the definition of “sample,” the patent states that “[a] sample is the general subject of interest for a test that analyzes an aspect of the sample, such as an aspect related to at least one analyte that may be present in the sample.” Id. at col. 8 ll. 37–40. Similarly, the term “analyte” is defined as “a component(s) or potential component(s) of a sample that is analyzed in a test.” Id. at col. 9 ll. 1–2. And the term “test” is defined as “a procedure(s) and/or reaction(s) used to characterize a sample, and any signal(s), value(s), data, and/or result(s) obtained from the procedure(s) and/or reaction(s).” Id. at col. 8 ll. 7–9. Thus, the patent describes a relationship between a sample, the analyte(s) it contains, and the test(s) performed to analyze it. In contrast, the patent defines a “reagent” as “a compound, set of compounds, and/or composition that is combined with a sample in order to perform a particular test(s) on the sample.” Id. at col. 9 ll. 19–21 (emphasis added). Thus, a reagent is not a part of a sample, nor is it the same thing as a sample in the context of the patent. The ALJ’s findings reflect a correct determination that, while the term “sample” is defined broadly in the patent, the definition of “sample” is not so broad as to include reagents within its scope.

Becton Dickinson obtains reversal of PTAB in case over US 8,554,579

The outcome:

Becton, Dickinson and Company (“Becton”) appeals a decision from the Patent Trial and Appeal Board (“Board”), determining that certain claims of U.S. Patent No. 8,554,579 (“the ’579 patent”) were not invalid as obvious. We reverse.

BACKGROUND Baxter Corporation Englewood (“Baxter”) is the owner of the ’579 patent, which is directed to “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.” ’579 patent,


As an alternative ground to affirm the Board’s determination of non-obviousness, Baxter argues that the Board erred in determining that Alexander is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA).5 This section provides that “[a] person shall be entitled to a patent unless . . . the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” 35 U.S.C. § 102(e)(2).6

Baxter contends that Alexander nonetheless is not prior art because all claims in Alexander (granted on February 12, 2013) were cancelled on February 15, 2018, following inter partes review. Baxter argues that “because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2).” Appellee’s Br. 35.7 The text of the statute requires only that the patent be “granted,” meaning the “grant[]” has occurred. 35 U.S.C. § 102(e)(2) (pre-AIA). The statute does not require that the patent be currently valid.

A Gilbert Hyatt case on laches

The outcome:

The United States Patent and Trademark Office appeals a judgment of the United States District Court for the District of Columbia. Patent applicant Gilbert P. Hyatt filed an action under 35 U.S.C. § 145 against the Patent and Trademark Office to obtain four patents. The Patent and Trademark Office asserted affirmative defenses of prosecution laches and invalidity for anticipation and lack of written description. The district court first held a trial on prosecution laches and subsequently held trials on anticipation and written description. Following a Rule 52(c) motion at the first trial, the district court decided that the Patent and Trademark Office failed to carry its burden of proving prosecution laches. Following the patentability trials, the district court decided that certain claims were not invalid for anticipation or lack of written description and ordered the Patent and Trademark Office to issue patents as to those claims. We hold that prosecution laches is a defense available to the Patent and Trademark Office in an action to obtain a patent under 35 U.S.C. §145. We further hold that the district court erred in concluding that the Patent and Trademark Office had failed to prove prosecution laches. Accordingly, consistent with the principles of fairness and due process, we vacate and remand the district court’s decision on prosecution laches for further proceedings consistent with this opinion and to provide Hyatt the opportunity to present evidence on that issue. We hold the remainder of the case in abeyance, retaining jurisdiction over the anticipation and written description issues.

The Munchin case on a diaper pail system

Note: Chief Judge Moore assumed the position of Chief Judge on May 22, 2021.

The outcome of the Munchin case was a mixed bag:

Edgewell Personal Care Brands, LLC, and International Refills Company, Ltd. (collectively, Edgewell) sued Munchkin, Inc. in the Central District of California for infringement of claims of U.S. Patent Nos. 8,899,420 and 6,974,029. Edgewell manufactures and sells the Diaper Genie, which is a diaper pail system that has two main components: (i) a pail for collection of soiled diapers; and (ii) a replaceable cassette that is placed inside the pail and forms a wrapper around the soiled diapers. The ’420 patent and the ’029 patent relate to alleged improvements in the cassette design. See, e.g., ’420 patent at 2:18–32; ’029 patent at Abstract. As relevant to this appeal, Edgewell accused Munchkin’s Second and Third Generation refill cassettes, which Munchkin marketed as being compatible with Edgewell’s Diaper Genie-branded diaper pails, of infringement. J.A. 18474.

In February 2019, the district court issued a claim construction order, construing terms of both the ’420 patent and the ’029 patent. Based on those constructions, Edgewell continued to assert literal infringement of the ’420 patent, but only asserted infringement under the doctrine of equivalents for the ’029 patent. Munchkin moved for, and the district court granted, summary judgment of noninfringement of both patents. See Edgewell Personal Care Brands, LLC v. Munchkin, Inc., No. 18-3005-PSG, 2019 WL 7165917 (C.D. Cal. Oct. 16, 2019) (Summary Judgment Decision). Edgewell appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons discussed below, we vacate-in-part, reverse-in-part, and remand

The topic of claim vitiation arises:

We agree with Edgewell, however, that the district court erred in granting summary judgment of noninfringement of the ’029 patent under the doctrine of equivalents on the basis that the claimed “annular cover” and “tear-off” would be vitiated and rendered meaningless. Summary Judgment Decision, 2019 WL 7165917, at *6. “Under the doctrine of equivalents, an infringement theory . . . fails if it renders a claim limitation inconsequential or ineffective.” Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016). This vitiation doctrine ensures the application of the doctrine of equivalents does not “effectively eliminate [a claim] element in its entirety.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). Claim vitiation is a legal determination that “the evidence is such that no reasonable jury could determine two elements to be equivalent.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356–57 (Fed. Cir. 2012); see also UCB, Inc. v. Watson Labs. Inc., 927 F.3d 1272, 1283 (Fed. Cir. 2019) (Vitiation “is not an exception or threshold determination that forecloses resort to the doctrine of equivalents, but is instead a legal conclusion of a lack of equivalence based on the evidence presented and the theory of equivalence asserted.”). We review de novo a district court’s application of claim vitiation. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320–21 (Fed. Cir. 2003). Although the district court correctly construed “annular cover” as being a single structure, the district court erred in concluding that Edgewell’s theory of infringement under the doctrine of equivalents vitiates or renders meaningless the “annular cover” claim element. Vitiation has its clearest application “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006). But as we explained in Deere & Co., 703 F.3d at 1356–57, “[c]ourts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.’” See also Cadence Pharms. Inc. v. Exela PharmaSci Inc., 780 F.3d 1364, 1372 (Fed. Cir. 2015) (“The determination of equivalence depends not on labels like ‘vitiation’ and ‘antithesis’ but on the proper assessment of the language of the claimed limitation and the substantiality of whatever relevant differences may exist in the accused structure.”).
Applying these concepts to the facts of this case, we conclude that the district court erred in evaluating this element as a binary choice between a single-component structure and a multi-component structure, rather than evaluating the evidence to determine whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims. See, e.g., Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d 1353, 1368 (Fed. Cir. 2020) (limiting question of infringement under doctrine of equivalents to a “binary choice between ‘flourinated’ and ‘non-flourinated’ microchannels” was improper where a reasonable juror could have found negligibly-flourinated microchannel performed substantially the same function).

The outcome

Because the district court based its grant of summary judgment of noninfringement of the ’420 patent on an erroneous construction, we vacate that judgment and remand. Because the district court erred in granting Munchkin summary judgment of noninfringement of the ’029 patent, we reverse that judgment and remand.

Saturday, May 22, 2021

The CAFC case of Rajagopalan involves the topic of illicit manufacture of methamphetamine from pseudoephedrine

The CAFC does organic chemistry in Rajagopalan :

The ’191 application describes a composition that “prevent[s] [the] illicit manufacture of methamphetamine” from pseudoephedrine, a common pharmaceutical ingredient in over-the-counter allergy medication. J.A. 22. The application explains the basic two steps in the manufacture of methamphetamine from such available medications. The first step is isolation, or extraction, of the pseudoephedrine from the available medications, which contain other components. The second step is a chemical “reduction” reaction, involving reducing agents that donate electrons to the pseudoephedrine to produce methamphetamine. J.A. 23. The application discloses a pseudoephedrine composition that impedes the second (reduction) step of that conversion process. Specifically, it discloses a combination of pseudoephedrine with a food-flavoring excipient (an additive), J.A. 23, in which the “excipient may capture the electrons from the reducing agent . . . at a much higher rate than pseudoephedrine . . . thereby blocking the formation of methamphetamine,” J.A. 25. These food-flavoring excipients are referred to in the ’191 application as “organoleptic agents.” J.A. 23.

The In re Best case shows up

In this circumstance, “the burden shifts to the patentee to provide evidence” to rebut the examiner’s prima facie case—here, specifically, to show that the claimed inhibition of reduction would not result. See In re Brandt, 886 F.3d 1171, 1176 (Fed. Cir. 2018); ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66 (Fed. Cir. 2016); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Mr. Rajagopalan has not undermined the Board’s determination that he did not rebut the prima facie case.

Appellant Corephotonics loses on Arthrex and on merits

The outcome

Corephotonics, Ltd. appeals a final written decision of the Patent Trial and Appeal Board in an inter partes review brought by Apple Inc. Corephotonics argues that the Board issued its decision in violation of the Appointments Clause because the Board’s decision came after this court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1335 (Fed. Cir. 2019) but before this court issued its mandate. On this basis, Corephotonics argues that the Board’s decision should be vacated and remanded. On the merits, Corephotonics argues that substantial evidence does not support the Board’s findings as to patentability. Because we determine that the Board issued its decision after this court’s decision in Arthrex we decline to vacate and remand the Board’s decision underlying this appeal. Moreover, because substantial evidence supports the Board’s patentability determination, we affirm.

CAFC affirms PTAB rejection under 101 in Bongiorno case

The Appellant Bongiorno lost an appeal of 101 issues:

In a detailed analysis, the Board rejected all pending claims under § 101. At step one of the Alice inquiry, the Board determined that the claims of each application were directed to “planning and executing a vacation or travel itinerary,” which it concluded amounted to a method of organizing human activity—an abstract idea. J.A. 8–14 (’790 application); J.A. 538–44 (’821 application). The Board also rejected Mr. Bongiorno’s argument that the claims were directed to an improvement in technology; instead, the claims amounted to a “purportedly new arrangement of generic information.” J.A. 10–13, 538–44 (citing Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)). The limitations recited not “inventive programming” but “simply desired results.” J.A. 11, 15, 541, 547. At step two of the Alice inquiry, the Board determined that the additional recited elements, considered individually or as an ordered combination, do not amount to significantly more than the abstract idea itself. J.A. 14–16, 545–47. That is, the elements amounted simply to “apply[ing] the abstract idea using generic computer components performing routine computer functions.” J.A. 15, 546. The Board was further unpersuaded that certain limitations that Mr. Bongiorno raises on appeal—e.g., mechanical buttons, a “weather detour” interface screen, a site-bysite “indoor-outdoor rating”—changed the eligibility conclusion. See, e.g., J.A. 15–28, 546–47

We agree with the Board, which addressed Mr. Bongiorno’s claims thoroughly. The claims of both applications are drawn to organizing human activity, including planning and executing a travel itinerary, in a manner that renders the claims directed to an abstract idea. See Alice, 573 U.S. at 220, 226–27. (...)
Because we agree with the Board that the claims are not patent-eligible, we affirm.

Saturday, May 15, 2021

CAFC works through "personal jurisdiction" issues in Trimble; ND Cal holding of "no jurisdiction" reversed

The outcome was a finding of personal jurisdiction:

Trimble Inc. and Innovative Software Engineering, LLC (“ISE”) appeal a judgment dismissing their declaratory judgment noninfringement action against PerDiemCo LLC for lack of personal jurisdiction. PerDiemCo is the owner of eleven patents that it accused Trimble and ISE of infringing in letters and other communications sent to Trimble, a California resident. Relying on this court’s decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998), the United States District Court for the Northern District of California held that it would be unreasonable to assert personal jurisdiction over PerDiemCo based on its communications to Trimble in California. We conclude that Red Wing does not preclude personal jurisdiction on the facts of this case and that the district court had personal jurisdiction over PerDiemCo.

Appeal from the United States District Court for the Northern District of California in No. 4:19-cv-00526-JSW, Judge Jeffrey S. White.

Uniloc loses appeal of PTAB ruling at CAFC

The outcome:

Uniloc 2017 LLC appeals from a decision of the Patent Trial and Appeal Board in an inter partes review of Uniloc’s U.S. Patent No. 8,539,552 (“the ’552 patent”). The Board held claims 1–17 and 23–25 of the ’552 patent invalid for obviousness in view of U.S. Patent No. 6,324,279 to Kalmanek et al. (“Kalmanek”). Uniloc argues that the Board’s decision as to those claims resulted from an erroneous construction of a claim term. In its cross-appeal, Apple Inc. argues that the Board erred by holding that Apple failed to show that the remaining claims of the ’552 patent, claims 18–22, would have been obvious in view of Kalmanek. We affirm.

Uniloc relies on an analogy to football:

Uniloc argues that under the plain and ordinary meaning of “intercepting,” the entity that “intercepts” a message cannot be an intended recipient of the message. To support that argument, Uniloc cites various dictionary definitions and relies on the following analogy: A player making an interception in football is not the intended receiver of the ball but instead seizes the ball on its way to the intended receiver. Uniloc contends that the Board’s construction improperly permits the network entity intercepting the signaling message to be an intended recipient of the message even if there is an additional intended recipient downstream. Uniloc is correct that the signaling message can have only one true “intended recipient,” as the claims of the ’552 patent use that term. Claim 1 specifies that the intercepted signaling message is “associated with a call between a sender device of the message and an intended recipient device.” Claim 1 later refers to “the intended recipient,” making clear that the client device on the other end of the impending call is the one true “intended recipient.” However, just because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity. To the contrary, the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient. For example, in one embodiment, the patent describes “a caller send[ing] an INVITE message to a callee by way of a proxy server,” ’552 patent, col. 6, ll. 1–2 (emphasis added), where the proxy server effectively performs the intercepting, determining, and filtering steps recited by the claims, see id. at col. 6, ll. 17–25.

Footnote 4 contains an item of interest:

Uniloc also relies on statements from its expert witness, Dr. William C. Easttom, II, in support of its claim construction position. The Board, however, declined to credit that testimony over the intrinsic evidence in the record, both because Dr. Easttom failed to consider the full disclosure and prosecution history of the ’552 patent and because Uniloc hindered or prevented Apple from cross-examining him. See Apple, 2019 WL 4492895, at *5 n.9. We uphold the Board’s decision not to give substantial weight to Dr. Easttom’s declaration for those reasons.

There is text about the distinction between RECOUNTING an argument and ENDORSING the argument:

According to Apple, that statement reflects that the Board endorsed Apple’s theory that the gate controller’s handling of the SETUP message satisfies the step of determining an authorization relating to codec specification. We disagree. As a preliminary matter, in the cited passage the Board was merely recounting Apple’s assertions, not endorsing them. See id. Moreover, the most reasonable reading of pages 36 through 38 of Apple’s petition is that the gate controllers of Kalmanek cannot determine an authorization of codec level using just the SETUP message. Supporting that interpretation is Apple’s statement in that section of its petition that “the [called party] sends a SETUPACK message that includes an acceptable CODING parameter,” followed by the statement that the “service provider then authorizes the requested quality of service for the call.” Petition for IPR, at 37 (emphasis added).

Separately, from blawgsearch:

Friday, May 14, 2021

Arthrex matter in New Vision case

New Vision won on an Arthrex matter:

New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court. See C.A. Casyso GmbH v. HemoSonics LLC, No. 20-1444 (Oct. 27, 2020) (non-precedential order) (vacating and remanding in analogous circumstances). Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.

[Interesting that the CAFC relies on a NON-PRECEDENTIAL order to establish a precedential case !]

But Judge Newman observed that a forum-selection clause controlled here and wrote:

My colleagues decline to reach this question, and simply hold that Arthrex requires vacatur and remand. However, the question of forum selection is not thereby resolved; it is merely postponed to determination by a new, constitutionally organized Board. It is both inefficient and unnecessary to require replacement PTAB proceedings if the new PTAB does not have jurisdiction to proceed.

Thus, while I agree that the Board’s decision must be vacated under Arthrex, I respectfully dissent from our remand without resolving the issue of forum selection.

What is at stake in this case is a bit MORE than inefficiency.

Both sides have briefed the forum selection question in this administrative context. New Vision cites Dodocase VR, Inc. v. MerchSource, LLC, 767 F. App’x 930 (Fed. Cir. 2019) to illustrate removal from the PTAB based on an agreed choice of forum. SG Gaming states that the Board’s rejection of the choice of forum is an unreviewable “institution” decision, citing Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020). These aspects require resolution now, rather than after a full PTAB proceeding on remand.

The Director of the Patent and Trademark Office has intervened in this appeal to argue that this court has no jurisdiction to review this action because it is “final and nonappealable” under 35 U.S.C. § 324(e). However, the Board’s rejection of the parties’ choice of forum is indeed subject to judicial review, for § 324(e) does not bar review of Board decisions “separate . . . to the in[stitu]tion decision.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Appeal is barred as to “a determination ‘whether a substantial new question of patentability affecting any claim of the patent is raised,’” Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012), but not as to “the Board’s ‘conduct’ of the review.” St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375 (Fed. Cir. 2014).

Judge Newman makes strong points about forum selection clauses:

New Vision states that forum selection was a contract condition, as is understandable, for it affects the standard of proof of invalidity. See O’Gorman & Young, Inc. v. Hartford Fire Ins. Co., 282 U.S. 251, 267 (1931) (“That the right to contract about one’s affairs is a part of the liberty of the individual protected by [the Constitution] is settled by the decisions of this court and is no longer open to question.”); Gen. Protecht Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1359 (Fed. Cir. 2011) (“[S]uch a forum selection clause would be meaningless because . . . the merits would have been litigated in a forum other than that which was bargained for.”).

Separately, note that IPBiz was in the top twenty of blawgs.

Monday, May 10, 2021

Rule 11 motion denied in Fireblok case

Hilti asserts that the district court improperly denied its Rule 11 Motion. Hilti argues that FireBlok’s case was weak and frivolous and that FireBlok lacked a good faith basis for the allegations in its complaint. In response, FireBlok argues that the court acted within its discretion in denying Hilti’s motion. FireBlok asserts that Hilti’s Rule 11 Motion failed procedurally and substantively by failing to identify specific conduct that allegedly violates Rule 11. See Fed. R. Civ. P. 11(c)(2). The court properly evaluated FireBlok’s conduct under an objective standard in determining that FireBlok had an objectively reasonable basis to pursue its claims based on the facts available to FireBlok before filing suit. See Memorandum Order at *3, *5. We discern no abuse of discretion in the court’s analysis.

CAFC affirms obviousness determination of PTAB in Votel case

The outcome:

The Board, for its part, noted that the ’584 application does not define or limit the term “vent,” and explained that “it is common knowledge that vents often have filters located therein or even covers/shutters.” J.A. 4. The Board further determined that the foam float pads in Bonacci would still likely allow some airflow when fitted into the openings. And the Board observed that the “vents” in the ’584 application are themselves designed to have a clip key inserted into them, thereby obstructing airflow. The Board thus concluded that the openings in Bonacci constitute “vents” within the meaning of claim 1. Appellants concede that “there is no evidence of record” that “closed cell foam” would not allow airflow and rely only on “the somewhat obvious implication” of the term. Appellants’ Br. at 7. We see no error in the Board’s determination. As to Wang, Appellants concede that Wang discloses a clip key structure for attaching an accessory to the frame but argue that the clip key in Wang is not configured to be inserted into a vent. The Board explained that the openings of Bonacci may be of any number and shape and that not all of the openings need be filled with buoyant material. The Board concluded that a person of ordinary skill “would have readily inferred that openings in Bonacci may also be configured to receive a key of a clip for an eyewear accessory, as Wang exemplifies.” J.A. 5–6. We see no error in the Board’s determination that this combination is within the scope of “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). We affirm the Board’s decision that claim 1 would have been obvious over the combined teachings of Bonacci and Wang.

Gree loses at CAFC in 101 case

There was no reprieve for Gree in Alice Step 2:

Turning to Alice step 2, we agree with the Board that nothing in the claims constitute an inventive step. As the Board correctly held, each of the limitations separately and in their ordered combination were routine and conventional. GREE argues that the input face has the capacity to distinguish between different types of operations; to wit, the “syntax of touches, swipes, and their combination to particular semantics, or the meaning of such operations.” Appellant’s Br. at 54. We see no error in the Board’s conclusion that swipe operations were conventional, as disclosed in the specification’s discussion of the prior art. ’799 patent, col. 1, ll. 8–28. The Board also correctly explained that none of the syntax of touches and swipes that GREE cites as its inventive step are captured in any of the elements of the claims. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Moreover, the claims do not recite the ability to move multiple objects simultaneously; rather, the claims call for moving “one or more of the plurality of associated objects as a group” (emphasis added)